Independence Harbor I Condominium
Association, Inc. v. Noel Turner
Claim Number: FA0603000666077
PARTIES
Complainant is Independence Harbor I Condominium Association, Inc. (“Complainant”), represented by Tracey E. Diamond, of Berger Legal, 52 Cameo Drive, Cherry Hill, NJ 08003. Respondent is Noel Turner (“Respondent”), 504 Smith Court, Independence Harbor, Edgewater, NJ 07020.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <independenceharbor.com>,
registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his
knowledge has no known conflict in serving as Panelist in this
proceeding.
Professor Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 24, 2006; the National Arbitration Forum received a
hard copy of the Complaint on March 27, 2006.
On March 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <independenceharbor.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 30, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 19, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@independenceharbor.com by e-mail.
A timely Response was received and determined to be complete on April
13, 2006.
On April 19, 2006, the Forum received an additional submission from
Complainant. This submission failed to
comply with Supplemental Rule 7 due to a lack of the required fee. The fee was
ultimately received late. Despite the
submission’s failure to comply with the applicable rules, it will be considered
by the Panel.
On April 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that it has used the trademark INDEPENDENCE HARBOR
extensively and continuously since 1987 in the real estate community. Complainant states that it “is the exclusive
licensee of this trademark in connection with real estate management...”
activities associated with the “Independence Harbor” development located in
Edgewater, New Jersey. Complainant
contends that significant money has been invested in advertising and promotion
of the trademark, thereby giving rise to “substantial public recognition and
goodwill” in the mark. Complainant
states that Respondent has registered a domain name identical to its mark,
specifically <independenceharbor.com>. Complainant argues that Respondent has no
legitimate interests or rights in the mark and that the domain name was
registered in bad faith. Complainant
further contends that Respondent is not currently known, nor has he been known
by the domain name but instead registered the name solely for the purpose of
disrupting the Complainants’ business.
B. Respondent
Respondent asserts that he has rights and interests with respect to the
disputed domain name and that he neither registered nor has ever used the
domain name in bad faith. Respondent
contends that since August 2000 he has been a resident condominium owner in the
Independence Harbor development and that in October of that year he registered
the domain name <independenceharbor.com>. He then established a website to serve as a
non-profit, non-commercial information site for residents and non-residents
alike. Respondent asserts that he has
continuously maintained the website at his own expense and that the website has
received no advertising or any kind of sponsorship, nor has it ever been
offered for sale or for lease in any way.
Respondent further contests Complainants’ rights in the INDEPENDENCE HARBOR
mark and also emphasizes the presence of a disclaimer on his website that
indicates that there is no relationship between himself and the registered mark
holder.
C. Additional Submissions
Complainant further asserted that Respondent’s use of the domain name
did not constitute fair use and that, to the contrary, Respondent’s unfair use
of the domain name was harmful to the entire condominium development. Complainant also contends that Respondent’s
disclaimer is insufficient to prevent Internet users from being confused as to
sponsorship, endorsement, or affiliation with the condominium. Complainant asserts that Respondent does not
have the right to provide the information he does on his website based on
principles of free speech.
FINDINGS
Complainant, Independence Harbor I
Condominium Association, Inc., is an organization that claims an exclusive
license in the federally registered mark INDEPENDENCE HARBOR. In support of this assertion, Complainant
provided copies of various legal documents, including an Assignment and License
Back Agreement (“Agreement”) executed by the Delaware River Port Authority
(“DRPA”) and Hartz River Road Limited Partnership (”Hartz”) on July 15,
2002. Pursuant to the Agreement, Hartz
assigned the INDEPENDENCE HARBOR mark to DRPA in exchange for an exclusive
license to use the mark for real estate purposes associated with the
Independence Harbor development located at 361 River Road in Edgewater,
N.J. The legal documents indicate that
Hartz owned the U.S. Federal Registrations for INDEPENDENCE HARBOR No. 2567209,
Registered May 7, 2002, and No. 2558616, Registered April 19, 2002. Both marks are for real estate management
and leasing of commercial, residential and retail store properties. One of the documents indicates that Hartz
will permit the Condominium Association to freely use the INDEPENDENCE HARBOR
mark in connection with its activities.
That document further provides that “DRPA shall have the sole right, at
its sole expense, to seek legal redress for unauthorized use or infringement of
the Independence Harbor mark.” However,
if DRPA chooses to not take any action against infringement, Hartz may, under
certain circumstances, take action to enforce its rights in the mark. A separate document assigns rights in the
mark from Hartz to the Complainant.
However, it does not make mention of any enforcement rights.
Complainant has not clearly shown that they
are the proper parties to bring an enforcement action regarding the
Independence Harbor mark.
Respondent, Noel Turner registered the domain
name <independenceharbor.com>
on October 31, 2000 to supply information about the condominium development in
which he lives and owns. The site
includes information such as contact numbers, condo rules, sales information,
and other data available to residents and the general public. Respondent and the present officers of
Complainant condominium association have been involved in a long-running
dispute over the content and ownership of Respondent’s website. On May 11, 2004, the condominium association
registered their own website <independenceharbor.org>.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Complainant contends that the <independenceharbor.com> domain name
is identical to its mark because the domain name completely incorporates the
name and merely adds the generic top-level domain (gTLD) “.com.” Addition of gTLD’s is necessary for domain
name registration and does not negate the identical aspects of the name and
Complainant’s mark INDEPENDENCE HARBOR, pursuant to Policy ¶4(a)(i). See
Nev. State Bank v. Modern Ltd.—Cayman Web
Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established
that the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy”); see also Daedowg-USA, Inc. v. O’Bryan
Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003)
(“Respondent’s domain name, <kioti.com>, is identical to Complainant’s
KIOTI mark because adding a top-level domain name is irrelevant for purposes of
Policy ¶4(a)(i).”).
However, Respondent’s registration of the
<independenceharbor.com>
domain name predates Complainant’s registration of the INDEPENDENCE HARBOR mark
with the USPTO. See Phoenix Mortgage Corp. v.
Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶4(a)(i)
“necessarily implies that Complainant’s rights predate Respondent’s
registration . . . of the domain name”); see
also Razorbox, Inc. v. Skjodt,
FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as the respondent’s
registration of the <razorbox.com> domain name predated the complainant’s
alleged rights (the respondent registered the domain name more than two years
prior to the complainant’s stated first use in commerce), the complainant did
not have standing to bring a claim under the UDRP).
While the Panel recognizes that the disputed
domain name and the registered mark are virtually identical, the Respondent’s
registration of the domain name predates the Complainants’ federal registration
by two years. Although Complainants’
registration indicates a first use in commerce date prior to Respondent’s
registration, there is no explanation of the nature or scope of the use in
commerce by Complainant, and it is clear that others used the name Independence
Harbor prior to Respondent’s domain name registration and continue to do
so. While the INDEPENDENCE HARBOR mark
is presumptively distinctive for the services noted based on the registered
mark, this does not remove the terms from the lexicon of the public to the
extent necessary for common descriptive needs.
The mark INDEPENDENCE HARBOR is a descriptive term that is required to
be used in order to identify a particular geographical location. See
Zero Int’l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are
legitimately subject to registration as domain names on a ‘first-come,
first-served’ basis.”).
Complainant has not proven this element.
Complainant asserts that Respondent has no
rights or legitimate interest in <independenceharbor.com>. Complainant states that the only apparent
use of Respondent’s website is to describe the Independence Harbor real estate
development. Complainant has not
authorized this use and states that the website contains numerous inaccuracies
about the Independence Harbor real estate property. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (where the complainant asserts
that the respondent has no rights or legitimate interests with respect to the
domain name, it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
control of the Respondent”).
Respondent disputes Complainant’s
characterization of the website and points out that he has never been contacted
by the board regarding factual inaccuracies since the website’s inception and
that the information is correct and up-to-date and meets his goals of
objectivity and full disclosure.
Because Respondent does not use the domain name for commercial purposes,
the Respondent has established rights in the disputed domain pursuant to Policy
¶4(c)(iii). See Lockheed Martin Corp. v.
Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding respondent has rights
in the <missionsucces.net> domain name where she was using the domain
name in connection with a non-commercial purpose); see also Baja Marine Corp. v.
Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that
respondent has rights and legitimate interests in the domain name where the
respondent made a non-commercial use of the <bajaboats.com> domain name
and received no funds from users of the site connected to the domain name).
Respondent also uses a prominent disclaimer
on his website. This disclaimer also
supports Respondent’s claim that he has rights or legitimate interests in the
disputed domain. See Am. Online, Inc. v.
Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent has rights or legitimate interests in the
<aoltrafficschool.com> domain name by virtue of the respondent’s
prominent use of a disclaimer).
Complainant has not proven this element.
Complainant asserts that Respondent
registered and is using the disputed domain name in bad faith. Complainant claims that Respondent has
intentionally attempted to attract Internet users to its website by creating a
likelihood of confusion, and that users have likely mistakenly visited
Respondent’s website and received bogus information about the Independence
Harbor property. Complainant fails to
cite any specific portions of Policy ¶ 4(b) that are implicated by Respondent’s
website or provide any facts as evidence of Respondent’s registration and use
in bad faith aside from the general assertion noted above. The Panel notes that the elements set forth
in Policy ¶ 4(b) are illustrative rather than exclusive and that evidence may
be presented that does not rely on Policy ¶ 4(b) factors to show registration
and use in bad faith. However,
conflicting assertions regarding the general veracity of the information on a
disputed website without more is insufficient evidence of registration and use
in bad faith within the meaning of Policy ¶ 4(b).
Respondent’s registration of the disputed
domain name predating Complainant’s registration of the INDEPENDENCE HARBOR
mark indicates a lack of bad faith on Respondent’s behalf. See
Ode v. Intership Ltd., D2001-0074
(WIPO May 1, 2001) (“We are of the unanimous view that the trademark must
predate the domain name.”).
Respondent’s disclaimer also indicates a lack
of bad faith as it shows Respondent does not intend to attract Internet users
to its website by creating a likelihood of confusion with Complainant’s
mark. See Al-Anon Family Group
Headquarters, Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to
find bad faith where the respondent conspicuously informs viewers that his site
is not affiliated with the complainant and alternatively finding that such a
disclaimer is evidence of good faith on the part of the respondent which
precludes any determination that the respondent intentionally attempted to
attract Internet users to his website by creating a likelihood of confusion
with the complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of the respondent’s website).
Numerous cases find that if a Respondent has
rights or legitimate interests in the disputed domain, pursuant to Policy
¶4(a)(ii), then Respondent’s registration and use of the domain name are not in
bad faith pursuant to Policy ¶4(a)(iii).
These cases find such a result even where the Respondent is using the
domain name in connection with a fair business interest or otherwise offering
goods or services on their website. See Schering
AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000); see also DJF Assocs., Inc. v.
AIB Commc’ns., FA 95612 (Nat. Arb. Forum Nov. 1, 2000). There is even stronger support for a finding
of good faith where Respondent’s use of the domain name is merely descriptive
and Respondent’s website is purely informational and non-commercial in nature.
Complainant has not proven this element.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Professor Darryl C. Wilson, Panelist
Dated:May 3, 2006
National
Arbitration Forum
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